Ex Parte MAKOWSKI et al - Page 12


                 Appeal No.  2002-0796                                                        Page 12                    
                 Application No. 09/110,994                                                                              

                        Appellants’ arguments that Sparks and Ivanenkov describe protein-protein                         
                 interactions, while the Petrenko reference relates to protein-ligand interactions,                      
                 are also not convincing.  Petrenko, Ivanenkov and Sparks all relate to the ability                      
                 to determine a peptide sequence that specifically binds to a binding partner                            
                 through the use of a phage display library.  One of ordinary skill would expect                         
                 that if there were to be difficulties, such difficulties would occur in the screening                   
                 of the phage display library to determine the consensus peptide sequence, and                           
                 not in using that consensus peptide sequence to search a sequence databank                              
                 such as GenBank.  Again, as noted, one of ordinary skill would have been                                
                 motivated to perform such a searching step using a small consensus sequence                             
                 such as that taught by Petrenko in order to determine potential biological targets                      
                 and potential unexpected sources of interaction and/or toxicities.  Moreover, the                       
                 method of claim 1 is not limited to finding natural protein targets of biologically                     
                 active small molecules, but to any protein that may contain the consensus                               
                 sequence, and thus serve as a source of potential interaction or toxicity.                              
                        With respect to Appellants’ argument that the amino acids which form the                         
                 binding sites for small ligands must often be presented as a “scaffold,” and one of                     
                 ordinary skill in the art would have no reason to expect that “a peptide library                        
                 could sufficiently present binding site amino acids in the correct scaffold,” which                     
                 appellants assert that they have demonstrated that such correct presentation                            
                 does occur.  Again, the method of claim 1 is not limited to finding natural protein                     
                 targets of biologically active small molecules, but to any protein that may contain                     
                 the consensus sequence, and thus serve as a source of potential interaction or                          





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